This case stands out to me for three reasons.
CRF International Holding B.V. has lost (pdf) a UDRP it filed at World Intellectual Property Organization against the domain name TopEmployers.com. The case caught my attention for three reasons.
1. This is the second day in a row that the intellectual property firm Novagraaf has come up in a UDRP I’ve read. Yesterday, I wrote about a reverse domain name hijacking case for YouSwitch.biz. Novagraaf did not represent the Complainant in that case but did send the initial cease & desist letter. Novagraaf represented the Complainant in TopEmployers.com. I should note that a search shows Novagraaf has been involved in over 200 UDRPs and has only lost a handful, so this might be an anomaly. But it also should have known better than to file the TopEmployers.com case. [Update: as astute reader pointed out that, while Novagraaf hasn’t lost many cases, it has been on the wrong side of three reverse domain name hijacking cases.]
2. The TopEmployers.com case is another one that could have been avoided if the UDRP intake process required the Complainant to answer a simple question:
Do you claim trademark rights to this domain name that pre-date the domain owner’s registration of the domain name?
In this case, the domain was registered in 1999 and this appears to be over a decade before the Complainant had rights in the term Top Employers Institute (not even Top Employers). So the domain could not have been registered in bad faith to target the trademarks. Rather than address this issue, the Complainant merely stated:
The Complainant notes that the Respondent has registered the disputed domain name in 1999, a reasonably long time to be able to develop a website and acquire a legitimate interest in respect of the disputed domain name.
3. The World Intellectual Property Organization panelist failed to consider reverse domain name hijacking. True, the domain owner didn’t respond, but a panelist should consider it regardless when the situation warrants it. In this case, there’s the issue of a dead-on-arrival filing given the dates. Also, the Complainant made a wild argument that the parking page at the domain was designed to mimic the Complainant’s website. That’s a big stretch, and panelist Assen Alexiev disagreed with it.